Following the enactment of Law No. 13 of 2016 on Patent (New Patent Law), the Ministry of Law and Human Rights recently issued Circular Letter No. HKI-3-08.OT.02.02 of 2016 on the Transitional Period of Patent Maintenance Fee Payment from the old Patent Law (Law No. 14 of 2001) to the New Patent Law (Circular Letter).

As mentioned in our previous client alert, the New Patent Law shortens the procedure and period for paying maintenance fees. The first annual fee payment must be made within six months after the Patent certificate is issued.

In light of the above, the Ministry of Law and Human Rights has set out further specific rules to regulate maintenance fees as follows:

  1. For annual fees which are outstanding and due before the effective date of the New Patent Law, the procedures, the calculation of annual fees, and any fines involved will be in accordance with any rules set out in the old Patent Law.
  2. For annual fees which become outstanding and due after the effective date of the New Patent Law, the calculation of annual fees, and any fines involved will be in accordance with the rules set out in the New Patent Law.
  3. For annual fees which become due between the effective date of the New Patent Law and 30 December 2016, payment for the Patent annual fees for the 2016 and 2017 periods of protection can be made up to 30 December 2016.
  4. A patent will be deemed cancelled if the annual maintenance fees referred to in point (3) above are not paid by the due date.

The effective date of the New Patent Law is 26 August 2016.